The Patent Litigation Law Review: Turkey
Geographically positioned between Europe and Asia, Turkey is a very important strategic country with a population of 82 million, including a large youth population compared to the EU. Turkey, a G20 country, aims to position itself in the global value chain and to strengthen its exportation platform by focusing on high-tech patents, including electronic machinery and equipment, automotive spare parts, railroad and maritime transportation, as well as energy generation and efficiency projects. In addition, as a natural hub for transportation, Turkey is a transitional trade platform to and from Europe and Asia, which significantly increases the importance of IP rights protection in Turkey.
Although an attractive market because of its size and geographical location, Turkey suffers from a counterfeiting problem, as mentioned in some reports. In the OECD-EUIPO study 'Mapping the Real Routes of Trade in Fake Goods', Turkey is cited as one of the source countries for counterfeit goods. Another report on EU customs enforcement of intellectual property rights mentions Turkey among the top three countries of provenance by value of detained counterfeit goods.
An important development regarding the patent legislation and litigation landscape was the entry into force of the Industrial Property Code 6769 (IP Code) on 10 January 2017, which is set to profoundly change IP in Turkey as it affects the legislative, administrative and professional components thereof.
The IP Code made wide-ranging structural changes at:
- the legislative level – regarding the establishment, prosecution, maintenance and enforcement of IP rights;
- the administrative level – regarding the administrative structure and function of the Patent and Trademark Office (previously known as the Turkish Patent Institute);
- the professional level – with new rules regarding the organisation and activities of patent and trademark attorneys, especially from a disciplinary standpoint; and
- the judiciary level – concerning the Patent and Trademark Office's judicial competences, such as the cancellation of trademark registrations on the ground of non-use.
The new IP Code repeals the following decree-laws with an act of Parliament:
- Decree-Law 551 on patents and utility models;
- Decree-Law 554 on designs;
- Decree-Law 556 on trademarks; and
- Decree-Law 555 on geographical indications.
The IP Code, enabling the patentee to use legal means harmonised with the EU legislation and with international agreements such as the Paris Convention and TRIPs, provides effective legal means for enhanced patent enforcement capabilities.
According to the statistics, the average number of patent litigation cases filed per year between 2015 and 2018 was 225. This number increased to 235 in 2019. Most of the patent litigation cases are handled before the specialised IP courts in Istanbul, Ankara and Izmir.
Types of patent
Although the new IP Code provides exclusive rights for two types of rights – namely, patents and utility models – there are currently three types of exclusive rights regarding the patents that are subject to enforcement remedies.
National patents are patents filed in Turkey and registered by the Turkish Patent and Trademark Office (TurkPatent) for 20 years. It is possible to oppose national patents within six months upon the publication of the grant decision in the official patent bulletin of TurkPatent.
International patents that designate Turkey are deemed national Turkish patents valid for 20 years from the application date.
Utility models require the existence of novelty and industrial applicability but do not require the criterion of inventive step for grant. The term of utility models is 10 years starting from the filing date.
Short-term patents are patents granted without undergoing substantive examination for a period of seven years as per the repealed Decree-Law 551 on the protection of patents. Despite the fact that all provisions with regard to short-term patents have been abolished by the IP Code, patents that were granted according to the former Decree-Law are still alive and enforceable.
Supplementary protection certificates (SPCs) are not afforded protection in Turkey.
Procedure in patent enforcement and invalidity actions
There are specialist criminal and civil courts of intellectual and industrial property rights established in Istanbul, Ankara and Izmir, which have jurisdiction in all IP matters, including patent disputes. Other cities have specific first instance courts that are designated as specialist IP courts. These specialist courts are composed of one judge, who does not have a scientific or technical background but is knowledgeable and experienced in IP disputes. The following rules for forum selection apply:
- all challenges to administrative decisions of TurkPatent are heard by the Civil Court of Intellectual and Industrial Rights of Ankara;
- infringement and unfair competition actions should be heard in the court of the locality where the plaintiff resides, or where the wrongful act was committed in, or otherwise where the effects of that act have been observed;
- invalidity and declaration of non-infringement actions should be heard in the court of the locality where the defendant IP holder resides;
- actions brought by non-resident IP holders should be heard either by the court where the agent registered for the IP right before TurkPatent is located, or the specialist court of Ankara; and
- forum selection by agreement between the parties is permitted, subject to a signed agreement.
In practice, Istanbul is the city in which the highest number of patent litigation matters are filed, as it is the city where the highest number of agents of foreign IP right holders are domiciled and it is the central city for most industrial activities. Istanbul IP Courts have been involved in the most complex patent disputes and have given decisions shaping the patent litigation environment.
ii Are there any criminal sanctions for acts of patent infringement?
Patent infringement is not a criminal offence, so the new IP code does not provide criminal sanctions against acts of patent infringement; only civil remedies are available.
iii Who can institute infringement and invalidity actions?
Turkish Civil Procedural Law requires the legal interest in an infringement action for the patentee to be entitled to institute patent infringement actions against third parties for determining, preventing and ceasing the infringement.
The IP Code stipulates special conditions for licensees to file infringement actions. The exclusive licensee of a patent has all legal remedies pursuant to the IP Code available against infringing third parties unless it is agreed to the contrary in the licence agreement.
The non-exclusive licensee is required to notify the right holder under special conditions. In the case of serious risk of damage, the licensee has the right to request the court to order for preliminary injunction while subjecting the licensee to notify the right holder of the infringement by asking him or her to file an action against the infringement.
iv Can the infringement claim be based on a patent that has not yet been granted?
An infringement claim needs to be based on a granted patent (either a national patent or a patent validated through the European patent or the Patent Cooperation Treaty (PCT)). However, the infringement claims can also be put forward upon the publication of the patent claims in the official bulletin of TurkPatent or even before the publication of the patent claims, provided that the infringing third party is notified with the patent application and its scope of protection. In such cases where the infringement is based on a patent application, the court stays the final ruling until the grant of the patent.
If the patentee wants to enforce a European patent that has not yet been validated in Turkey, it is possible to obtain provisional protection in accordance with Article 67 of the European Patent Convention (EPC). In such case, the translation of the claims for asserting the patent should be published in the official bulletin of TurkPatent.
v Limitation period
The limitation period for claims of infringement is stipulated according to the general provisions of the Turkish Law of Obligations, which is two years upon becoming aware of the infringement and 10 years in any event. In cases where the infringement is ongoing, the limitation period will be deemed continuously refreshed.
The invalidity of a patent can be claimed during the protection period of the patent or within five years upon the expiry of the patent term against the patent right holder recorded in the Patent Registry by a person who has a legal interest in the invalidity of the patent, by public prosecutors or by relevant public authorities.
vi Procedure in patent enforcement and invalidity actions
Alternative dispute resolution means, such as arbitration and mediation, are available to the parties in lieu of an outright infringement and invalidation action. The procedure before the civil courts has four main stages, which are valid for both patent enforcement and invalidity actions: (1) the mediation phase; (2) the initial examination phase; (3) the experts' examination; and (4) the decision phase.
As of 1 January 2019, the Turkish Commercial Law stipulates that a party claiming compensation shall apply to mediation proceedings before filing a court action with compensation claims. The application for mediation has become a mandatory pre-condition for filing a court action. Therefore, should the plaintiff decide to claim compensation besides the claims of infringement or invalidity, they will need to contact the defendant for an amicable settlement under the mediation procedure first. There is no mandatory mediation requirement for patent infringement or invalidity action where there is no compensation claim.
Despite the fact of the stipulation of the Turkish Commercial Law, a recent decision of the Supreme Court2 overruled a decision of the Appellate Court and the Court of First Instance that rejected a trademark infringement action wherein the IP right holder claimed also for material compensation. The Supreme Court ruled that it is not mandatory for the plaintiff to apply for mediation if the compensation claim is filed together with a non-monetary claim. This ruling is open to a further discussion before the Appellate Court and therefore, the approach of the Court of First Instance may show the general tendency to the actions with compensation claims.
Initial examination phase
When a dispute is brought before a Civil Court of First Instance, the court serves the writ of summons to the defendant. After receiving the writ of summons, the defendant must submit its replies within two weeks of the notification. After the defendant's replies, both parties have one more exchange of petitions to submit to the court. The parties are entitled to ask for an extension of time for providing their responses to each other in this phase. After completion, the court proceeds with the preliminary examination stage. In this stage, the judge examines whether the procedural requirements have been fulfilled by the parties and determines the subject matter of the dispute.
The experts' examination
Examination of the merits of the dispute starts at this stage. The court appoints a panel of experts – usually consisting of one Turkish patent attorney or European patent attorney and two technical experts in accordance with the field of technology. The experts submit their reports and parties have the chance to object to the report findings. Should the court find the objections of the parties sufficient, then the court may refer the file to the same panel of experts for an additional experts' report in the light of the objections or appoint a new panel of experts for the issuance of another experts' report. Should the experts' reports submitted by the second panels contradict the first set, then the judge may decide to conduct a further round of experts' examination. Calculation of the amount of compensation (if claimed by the plaintiff) requires further experts' examination by a financial expert or experts.
The judge ends the experts' examination phase and schedules a day for hearing the final arguments of the parties, if it decides that the matter has been examined sufficiently and the information at hand is enough to rule on the matter. After the oral proceedings, the court renders its reasoned decision.
Detailed information on the procedures with regard to the appeal phase may be found in Section VII.
vii Process for obtaining and presenting material to the court
According to Turkish procedural law, all parties are obliged to file documents evidencing their claims or defences, or both. In cases where there is a risk of loss, parties with legal interest may ask the court for the determination of evidence. This determination may be requested either prior to filing the main civil proceedings or within the context of a pending action for securing the evidences (if it is at risk of being concealed or lost).
As determination of evidence is also regulated under the IP Code on the basis of Article 150/3, the patentee may ask the court to order to the infringer to submit documents in relation to the use of the patent for determining the damages for a possible claim of compensation.
The patentee, during the proceedings, is also entitled to ask public authorities, such as TurkPatent, Customs or any related regulatory body or bodies, to submit information in their possession for evidentiary purposes through the court.
viii Amendment of patents in the course of court proceedings
It is possible to amend the claims during the post-grant opposition proceedings before TurkPatent, which is a major structural change introduced with the new IP Code as of 2017 (Article 99(4) IPC).
During an invalidity court action, where the grounds for invalidity concern only part of a patent, a partial invalidity of this patent shall be ruled by cancellation of the claims pertaining to such part. A claim may not be partially invalidated (Article 138(4) IPC). In other words, a claim may not be amended, but may be cancelled as a whole.
On the other hand, a European patent validated in Turkey may be limited by amending the claims in proceedings before the competent court or authority relating to the validity of the European patent according to Article 138(3) EPC. The patent as thus limited shall form the basis of the proceedings.
Cancellation of an independent claim causes the cancellation of the dependent claim or claims with the proviso that each of the dependent claims, on its own, does not meet the patentability criteria. Accordingly, the dependent claims meeting the patentability criteria, independently from each other, shall survive (Article 138/4).
In this regard, the new IP Code does not provide the possibility to amend the claims by bringing them together to overcome their cancellation. This stance conforms to the practice of the courts in retaining or cancelling the claims in their entirety.
ix Invalidity as a counterclaim
Turkey has no bifurcated system in patent matters. An invalidity claim can be put forward within the context of the infringement action as a counterclaim or separately in a separate action. Here are two possible scenarios in case the defendant files an invalidity action:
- where party A files an infringement action, the adverse party B may file a counteraction claiming invalidity within the context of the infringement action. In this case, the court would examine these two claims at the same time; and
- where A files an infringement action, the adverse party B may file a separate invalidity action before a different competent court. In this case:
- the court before which the invalidity action is filed may decide to consolidate the file with the earlier infringement action on its own discretion. In this case, the invalidity and the infringement actions will proceed simultaneously under the same action; or,
- the court competent for the infringement action may decide to stay the proceedings until the invalidity action is concluded.
There is no provision or consistent practice concerning the acceptance of a pending opposition, especially if an opposition is filed before the EPO, which has been accepted as a dilatory issue. This defence is evaluated as per the specific circumstances of each case. In two relatively recent Supreme Court decisions, it was stated that the Court should check the status of the European patent that was opposed before rendering a decision in a pending patent litigation matter.3
x Timing and cost
Turkey has a three-instance court system and civil procedure, consisting of the Court of First Instance, the Regional Appellate Court and the Supreme Court in the third instance.
Depending on the complexity of the matter and the rounds of expert examination by the panel of experts during the proceedings, a patent litigation suit takes around 18 to 30 months from the filing of the action up to the Court of First Instance's decision.
The official fees and expenses for a patent litigation suit, whether for an infringement or for an invalidity action, and where there is no compensation claim, depend on the rounds of examination by the court-appointed panel of experts. The expenses and official fees in a straightforward lawsuit with one round of examination would be around US$2,000. In either infringement or invalidity procedures, the official fees would increase depending on the amount of the compensation to be claimed.
The court does not rule on the effective attorney fees spent for the prosecution of the file through an attorney-at-law. The court will only rule to a fixed attorney fee, which is determined by the Turkish Bar Association (around US$250), and the reimbursement of the official fees paid by the winning party at the end of a patent litigation suit either for infringement or invalidity where there is no compensation award. If the court has awarded the plaintiff compensation, the reimbursed attorney fee may increase depending on the amount of awarded compensation. For instance, if the court has awarded US$1,000, the winning party will be entitled to ask for 12 per cent of such amount as an attorney fee, in addition to fixed attorney fees.
xi Preliminary relief
The patentee is entitled to obtain a preliminary relief order in the following situations: (1) within the context of the main infringement action; (2) within the context of the evidential action; or (3) independently.
In each case, preliminary relief may be requested and carried out ex parte or inter partes, subject to the discretionary competence of the court. In practice, the courts are quite conservative in granting ex parte preliminary relief.
A preliminary relief request may be refreshed at any stage of the action when there is a new development on the matter and a change in the conditions, such as the issuance of a favourable expert report, etc.
Preliminary relief requests are deemed to be urgent matters to be handled according to Turkish procedural law. The most important requirement is to submit substantial evidence attesting a prima facie infringement to convince the judge that there is risk of an infringement. Another requirement would be to deposit a guarantee payment before the court (on discretion of the judge) for the execution of the preliminary relief order once the decision is rendered by the court. The guarantee payment and the request of execution of the preliminary relief order shall be done within one week of the issuance of the preliminary relief order by the court. Failure in depositing the guarantee payment and in the execution of the order within one week results in the release of the preliminary relief order.
The amount of the guarantee payment depends on the discretion of the court in view of the value of the dispute, (i.e., the commercial value of the patent).
Finally, the Turkish IP courts can also reverse preliminary relief orders upon the deposit of the guarantee payment by the defendant. In such case, the court may order a preliminary relief that will prevent the patent holder from enforcing its patent rights against the defendant parties.
There are no practice and legal grounds for protective letter in Turkish procedural law.
xii Liability for threatening infringement
The general provisions of Turkish law seek and protect the interest of a person who puts forward claims against third parties. Should a patentee threaten third parties with a patent infringement action in bad faith knowing that a third party does not infringe the subject patent, and threatens the third party with the cease of its commercial activities in case it continues to carry them out, this patentee would face liability based on the general provisions of the Turkish Civil Law. Besides, such actions would also incur liability based on unfair competition claims.
The Turkish Commercial Law reads that the following actions constitute unfair competition:
- discrediting others or their goods, their activities, or the products of their work or their commercial affairs by means of wrong, deceitful or uselessly offensive statements;
- giving wrong or deceitful information regarding one's own situation, goods and the products of one's work, one's commercial activity or commercial affairs of acting in the same manner regarding third persons or putting them in a situation above their competitors; and
- acting as if one had obtained a distinction, degree or reward without having obtained the same, thus trying to create the impression that one has exceptional capacities, or using false titles or professional names that are liable to create such impression.
Accordingly, anyone threatening third parties with patent infringement based on deceitful information shall face unfair competition claims.
The commercial use of a patented invention and its embodiments are defined as infringing activities in the IP Code, which stipulates that the partial or complete imitation of products embodying the patented invention is an act of infringement against the patent rights of the patentee.
The IP Code specifies infringing parties as persons who know or should have known that the products in question are imitations. By doing so, end users and consumers are excluded from the acts of infringement. Two elements, the commercial purpose and benefit of third parties, are sought in an infringement. This being said, the IP Code provides that the following actions constitute acts of infringement:
- distribution, sales, importation or the commercialisation in any other way of products embodying the patented invention;
- keeping such products in possession for commercial purposes;
- use of the patented product by means of making the patented invention applicable; and
- making proposals to establish an agreement related to a patented product.
The IP Code introduces a separate provision with regard to the acts of infringement against process patents. The following actions of third parties who know or should have known that the process is being used without the consent of the patentee are deemed to be infringing:
- the use of the patented method;
- the sale, distribution, importation or commercialisation in any other way of the products obtained directly by the patented method;
- keeping products obtained directly by the patented method in possession for commercial purposes;
- the use of the patented method by means of making the patented invention applicable; and
- making proposals to establish an agreement related to a patented method.
Moreover, the IP Code continues to consider the following actions as infringement: (1) the usurpation of a patent; and (2) the expansion or transfer of rights granted by the patentee through a contractual or compulsory licence agreement without the consent of the right holder.
As indicated above, preparatory acts, such as making proposals, are also deemed to be infringing actions.
However, the preparatory actions should be evidenced by substantial documents to constitute a serious basis for infringement claims.
Any party taking part in the commercialisation of the patented product in Turkey is liable for infringement. Importers and exporters of infringing goods, suppliers and any person who provides parts of the patented product in a way to apply the patented invention can be held liable for infringement.
Should the infringing party be a legal person, the Turkish Commercial Code requires fault and bad faith to hold the directors or the members of the entity's executive bodies, or both, liable. However, the liability would rest only on the legal entity in case of an infringement. This is a problem in the execution of the court decision for the payment of the compensation if the infringing entity goes bankrupt or liquidates itself upon being sentenced to pay compensation to the patentee.
ii Doctrine of equivalents
The claims define the scope of protection of a patent application or a patent, pursuant to the IP code. The IP Code rules that the claims are construed in the light of the applicant's declarations and statements during the examination proceedings and the validation of the patent. In patent infringement proceedings, the court will also take into account the doctrine of equivalents. In that regard, the construction of the claims is not limited to the literal meaning of the words used in the claims. An alleged patent infringement is first examined by comparing the properties of the product or process with the literal meaning of the words used in the claim. If that does not reveal an infringement, the court will evaluate whether the alleged product or process performs substantially the same function, in the same way, leading to the same result, as the claim – the purpose of the claims of the patent being to provide a reasonable degree of certainty to third parties and applicants, while also protecting the patentee. In that regard, the IP Code provides that claims should not be expanded to cover ideas that the inventor had conceived of but which were not included in the claims, and that the claims should cover the features expected to emerge from the reading of the description and drawings by a person skilled in the art.
Article 86 of the IP Code, regarding contributory infringement, reads as follows:
(1) The right holder of a patent is entitled to prevent third parties, from handing over to persons unauthorised to work with the patented invention, elements and means related to an essential part of the invention, subject matter of the patent, and rendering that which renders possible the implementation of the patented invention possible. In order that this provision may apply, the concerned third parties have to know, that such elements and means are sufficient for putting the invention to use and that they know, that they will be used to such effect or that the circumstances render such situation sufficiently evident.
(2) The provisions under Paragraph one of this present Article shall not apply, when the elements or means referred to in Paragraph one of this present Article are products commonly to be found on the market, unless third parties incite the unauthorised persons concerned to commit such (prohibited) acts.
First, two conditions are to be met according to Paragraph 1, the offered 'means and elements' must be essential features of the invention for infringement to be made out. Second, for liability to be established, third parties that offer these elements and means should be aware that they render possible the implementation of the invention.
In respect of 'means and elements' mentioned in Paragraph 1, which are 'commonly to be found in the market', Paragraph 2 introduces a third condition in that third parties have to have incited the unauthorised person to commit infringement.
The protection provided by a process claim extends to the products directly obtained by the process. The sales, use or importation of such products is a patent infringement.
Burden of proof in process patents
Where the patent concerns a process for the production or preparation of a product or a substance, the court may require the defendant to show that the alleged product has been produced without infringing the patented process.
Where the patented invention covers the process for the production or preparation of a new product or substance, the defendant is deemed to have produced the alleged product with the patented process. The burden of proof rests on the defendant to show that the product concerned has been produced by a different process than the patented one.
iii Invalidity and other defences
Besides lack of novelty, inventive steps and industrial applicability, patents can be invalid on the following grounds:
- Lack of sufficiency: the description, claims, and the drawings referenced in the description or the claims, do not explain the patent in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
- Added subject matter: the subject matter extends beyond the scope of the application as filed or beyond the scope of the earliest application, where the patent has been granted on a divisional application filed pursuant to Article 91 or on a new application filed pursuant to Article 110 (after the court's final decision ruling that the applicant does not have the right to claim a patent); and
- subject-matter that is not patent eligible: if the subject-matter of the patent falls within several categories defined by Article 82 of the IP Code, as not being regarded as inventions:
- discoveries, scientific theories and mathematical methods;
- plans, rules or methods regarding mental activities, business activities or games;
- computer programs 'as such' (but computer-implemented inventions in the sense of the EPC are patentable in Turkey); and
- aesthetic works, literary and artistic works, as well as scientific works; and presentation of information.
In addition, Article 82(3) of the IP Code excludes the following inventions as not patentable:
- inventions against public order or morality (although the prohibition of the commercial use of inventions by means of legislation does not mean that it is against public order or morality);
- plant or animal varieties or essentially biological processes (meaning the production of plants or animals consisting entirely of natural phenomena such as crossing or selection) to produce plants or animals, excluding microbiological processes (meaning any process involving or performed upon or resulting in microbiological material) or the products thereof;
- all therapeutic diagnostic and surgical methods to be applied to the human or animal body (this exception for therapeutic, diagnostic and surgical methods does not apply to products, particularly substances and compositions used in these methods);
- the human body, including the human body at the various stages of its formation and development and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;
- processes for cloning human beings;
- processes for modifying the germ line genetic identity of human beings;
- uses of human embryos for industrial or commercial purposes; and
- processes for modifying the genetic identity of animals that are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from these processes.
According to the IP Code, compulsory licences should be granted in the following circumstances:
- for the export of pharmaceutical products to address public health needs in other countries (the basis of this requirement is the Protocol amending the TRIPs Agreement – Additional Article 31-bis);
- where it is not possible to develop a new plant variety without infringing a patent;
- where actions have resulted in a limitation or violation of competition rules (Article 129/1e) (under Article 93 of the repealed Decree-Law No 551 mention was made of 'unfair competition'), the request for the compulsory licence can be made to the courts, or in the case of limitation or violation of competition rules, to the competition board;
- where the use of the patent is not sufficient to satisfy the requirements of the national markets;
- the failure to use the patent within the statutory time period of three years from the publication of the grant decision or four years from the date of request, whichever is later; and
- the discontinuance of use of the patent without a justifiable reason for an uninterrupted period of three years.
Article 85 of the IP Code on the scope and limits of a patent right provide under Paragraph 3 that 'activities for trial purposes involving a patented invention, including registration of the pharmaceutical as well as tests and trials required for registration' are exempted from patent protection.
The motivation of this provision explains that this enables the generic drug providers to launch their products just after the expiry of the patent term without waiting for the regulatory proceedings.
Precedent decisions ruled that filing an application for obtaining a marketing authorisation is deemed within the scope of the Bolar exemption and would not constitute patent infringement.
Preparation of a prescription
The use of medicines prepared in pharmacies without mass production for the preparation of a prescription and actions related to such medicines is exempted from patent infringement.
Use of breeder's rights for new plant varieties
The use of the propagating material of the harvest obtained by planting a patented product sold by the patent holder upon his or her consent or acquired in another commercial way by a small farmer is stipulated not to infringe the patent rights.
Use of animal breeding or other reproductive material
Farmers can use animal breeding or other animal reproductive material sold by the patent holder, or upon his or her consent, or otherwise acquired in another commercial way, for agricultural purposes. This right extends to the use of animals or other animal reproductive material for the purpose of maintaining the farmer's own agricultural activity. Procedures and principles with regard to the use of such right have been laid down in the implementing regulation.
According to Article 118 of the Implementing Regulation of the IP Code, the main aim for such a use should be for the continuation of the farmers' agricultural activity and not in the sense of any commercialisation of the reproductive cells, semen or embryo of the patented animal. The milk and meat production from the patented animal are not deemed to be the commercialisation of the patented animal but as the produce of agricultural activity of the farmer. Thus, the reproduction of the patented animal on the farm for the use of the farmer is also not deemed to be commercialisation of the patented animal.
Exhaustion of rights
The patent rights of a patentee are exhausted once they are put on the market by the right holder. The former contradiction between the law and jurisprudence was removed by the IP Code, which introduced the principle of international exhaustion of rights.
Final remedies for infringement
The IP Code provides several legal remedies to the patentee enabling the patentee to protect and enforce patent rights against infringing activities. One remedy of the IP Code is that it enables the patentee to request the prevention of an infringement in case of a serious risk of infringement.
i Evidential action for determination of act of infringement
It is possible to file a non-adversarial action, that may proceed ex parte subject to the court's discretionary competence, for the determination of the act of infringement or evidence, or both. A positive outcome of this action serves as official evidence and as the determination of the infringing act and evidence within the context of the subsequently filed main civil action.
Moreover, the patentee may request the determination of the production capacity and the process of production for the facilitation of calculation of the damages in the next stages of the proceedings.
ii Permanent injunction
The IP Code enables the patentee to request simultaneously the 'determination and prevention of infringement' from the court as a part of the permanent injunction order.
iii Compensation of material and moral damages
The patentee is entitled to ask for material and moral compensation. The calculation of the material compensation is based on the loss of profit.
Article 151, Paragraph 1 reads that the damages suffered by the patentee cover both the actual loss and the loss of profit. The loss of profit can be calculated according to one of the below methods preferred by the right holder:
- probable income that may be earned by the right holder if the competition of the infringer did not exist;
- net income earned by the infringer of the industrial property right; and
- the licence fee required to be paid in case the infringer of the industrial property right used such right by means of a licence agreement as required by law.
The IP Code stipulates that factors, such as the nature and extent of infringement, particularly the economic importance of the industrial property right or the number, term and type of licences related to the patent in dispute and at the time of infringement, shall be taken into consideration when calculating the loss of profit.
A patentee who prefers the method of calculation in points (a) or (b) above may request to add an appropriate amount to the calculated compensation in case the patent has a determinant role in the demand for the infringing product in the market.
In addition, the patentee is entitled to ask for moral and reputational compensation, where the reputation of the patent right suffers damage, in the event the products or services forming the subject of the right were used or produced in an inferior manner or where such products are launched in the market or made available in an improper manner.
iv Confiscation of infringing products and the devices and machines used in the production of such products
The patentee is entitled to ask for moral and material compensation and the seizure of the infringing products and devices and equipment used for their production to the extent these devices and equipment are not used in the production of other products produced by the adverse party.
v Measures to prevent the continuation of infringement
The patentee may also request the destruction of the infringing products, devices and machines used for their production if this is inevitable for prevention of the infringement or may ask for the change of the shape of the infringing products, devices and machines used for their production at the expense of the infringing third party, especially to prevent the continuation of the infringement.
vi Requesting the assignment of the infringing products and manufacturing devices
It is possible to request the assignment of the property rights on confiscated infringing products, on devices and machines used in the production of such infringing products, and the deduction of the value of such products, devices and machines from the total amount of the compensation determined by the court.
vii Publication of the court decision in daily newspapers or by means of similar mediums in whole or in summary
The patentee may request the publication of the finalised verdict, in whole or in summary, in daily newspapers or by other means, or the notification of the parties having interest in the legal proceedings at the expense of the adverse party.
viii Execution and suspensive effect of the decision
The final injunctions can be executed upon the finalisation of the court's decision. The finalisation of the court's decision matures upon the exhaustion of all legal routes, such as the appeal before the Regional Appellate Court and the Supreme Court, or in the lack of an appeal by the parties.
On the other hand, preliminary relief orders remain valid until the finalisation of the court decision unless the court renders a decision for the removal.
As to the suspensive effect of the appeal, the general rule according to the Civil Procedural Law is that the appeal does not have suspensive effect as of Article 367, Paragraph 1, but it does have a suspensive effect as of Article 367, Paragraph 2 for cases involving the 'right of persons, families, real estate'. The case law rules that the infringement of IP rights considered as acts of unfair competition are deemed to be closely related to 'personal rights'. For all such cases, the appeal has suspensive effect.
Article 162 of the IP Code rules that in all actions instituted against the decisions of TurkPatent, and in invalidity actions, the decision of the court is not executable until it becomes final.
Other types of patent proceeding
Declaration of non-infringement
Actions can be brought for declarations of non-infringement of a patent against the patentee, but these actions cannot be filed by a party against whom an infringement action has already been filed.
Since 2016, the decisions of the first-instance courts are appealed to the Regional Appellate Courts, and then to the Supreme Court of Cassation.
The Regional Appellate Courts have panels composed of three non-technical judges, who may either uphold the first instance decision, or quash the decision and render a new one. The Regional Appellate Court may hold hearings during the appeal and refer the file to a new panel of experts, if it is thought that the matter needs further examination.
The decisions of the Regional Appellate Courts are appealed before the Supreme Court, which has a special chamber for IP matters composed of a panel of five non-technical judges. Unlike the Regional Appellate Courts, appeals to the Supreme Court are limited to matters of substantive or procedural law. Decisions of the Supreme Court are final and cannot be appealed. If a decision is reversed by the Supreme Court, the case file is referred to the court of first instance or the Regional Appellate Court (whichever rendered the reversed decision).
According to Turkish procedural law, parties have the right to appeal, with no need to seek prior clearance.
Proceedings before the Regional Appellate Courts take between 15 to 20 months. Appeals before the Supreme Court take around 15 to 18 months.
The year in review
The most important development in IP litigation in Turkey is the post-grant opposition introduced by the IP Code, which applies to national patents filed after 10 January 2017. The post-grant opposition procedures are expected to develop as of the end of 2019 or during 2020, after the patents filed after 10 January 2017 are granted. It is expected to have a significant impact on patent litigation before IP courts in Turkey.
As mentioned above, the new IP Code substantially impacted the IP landscape in Turkey. Some issues that were vague according to the former Decree Law on patents received solutions increasing legal certainty, such as the burden of proof in process patents or whether a third party needs to notify the patentee before filing a declaratory non-infringement action. Some new questions have arisen with the new IP Code as well.
In particular, Article 82 provides that 'biotechnical inventions' are non-patentable, but this term is not defined in the IP Code and will have to be defined by case law. New rules on compulsory licences are also likely to give rise to disputes, and employee inventions, which is an area that requires more legal and operational certainty.
Another hot topic will be the patentability of computer-implemented inventions and AI technologies in Turkey in the coming years.
1 Mehmet Nazim Aydin Deriş is the founding partner, Okan Çan is a partner and Muazzez Korutürk is a senior associate at Deriş Attorney-At-Law Partnership, and Oya Yalvaç is a partner at Deriş Patent and Trademark Agency AS.
2 Supreme Court Decision – 11th Civil Chamber, File No: 2019/4851 E. Decision No: 2020/2732 K. Date: 10 June 2020.
3 Case dated 26 September 2017, No. 2016/2842 E, 2017/4725 K, and case dated 6 June 2013, No. 2011/8162 E, 2013/11840 K.